General Global Week in Review 9 Apr 2009 from IP Think Tank

Here is IP Think Tank’s weekly selection of top intellectual property news breaking in the blogosphere and internet.

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Highlights this week included:

Obama Administration asked for ‘balance’ in intellectual property appointments (Public Knowledge) (Ars Technica) (Media Wonk) (EFF) (Law360) (Intellectual Property Watch)

Senate Judiciary Committee passes Patent Reform Act of 2009 to Senate floor (Promote the Progress) (IP Watchdog) (Inventive Step) (Patent Baristas) (Patent Baristas) (Patent Docs) (IAM) (Intellectual Property Watch) (Managing Intellectual Property)

District Court Colorado: Uruguay Round Agreements Act (URAA) violates First Amendment to the extent it restored copyright against parties who had relied on works in the public domain: Golan v Holder (Lessig) (Technology & Marketing Law Blog) (Ars Technica) (Law360)

EPO: Several revisions to Implementing Regulation of the EPC; changes in divisional practice (Patent Baristas) (Daily Dose of IP) (IPKat) (Patent Docs)

Global – General

TomTom v Microsoft Linux, Australian and US patent reform – IP Think Tank podcast 6 April 2009 (IP Think Tank)

Stock markets wiped $22 trillion off intangible asset values in 2008 (IAM)

IP practices robust in downturn (IP finance) (Afro-IP)

Industry urges G20 to consider importance of IP (Intellectual Property Watch)

Global – Trade Marks / Brands

Green branding – cashing in on the eco-market (Spicy IP)

When is the right time to call in the strategists? (IP finance)

Global – Patents

Thomson Reuters study reveals world’s most innovative organisations by patent grants and applications (IAM)

Entrepreneurs: Ask two simple questions to determine whether IP strategy is critical to your new business venture (IP Asset Maximizer Blog)

If a robot invents, who’s the inventor? (Patent Baristas) (The Invent Blog)

RXP keeps on growing as five more companies sign the dotted line (IAM)

How patent vulnerability impacts valuation (IP Frontline)

Ensuring quality patents through a rigorous review process (IP Frontline)

Ocean Tomo, IP Exchange International launch for global IP market data (Philip Brooks’ Patent Infringement Updates)

Research circles, communities of practice and IP consciousness (IP finance)

Trade secrets: front and center? (IP finance)


Outsourcing (IP management) to Africa? (Afro-IP)


Major changes to Patents Act proposed; proposed changes anger Australian patent attorneys (Mallesons Stephen Jaques) (Managing Intellectual Property)

IP examination centre in Melbourne to boost Australian innovation and jobs (IP Down Under)

Full Federal Court: ‘Use it or lose it’ approach confirmed: E & J Gallo Winery v Lion Nathan (Mallesons Stephen Jaques)


M-Tel ‘best Bulgarian brand’ in independent survey (Class 46)


VANOC files suit against Coast2Coast alleging trademark violations in effort to block 2010 Winter Olympic ticket scalping (

UNCITRAL and IP security interests (Excess Copyright)


Patent Cooperation Treaty to come into force 2 June 2009 (Moeller IP)


IPR enforcement in China via inversed Trojan horse: LVMH invites China Investment Corporation to take an equity stake (IP Dragon)

Guidelines of the Supreme People’s Court on implementing the national IP strategy (IP Dragon) (Managing Intellectual Property)

Beijing Haidian District Court: Supermarket pays for background music: Music Copyright Society of China v MerryMart Chain Stores (IAM)


ECJ rules SUNPLUS confusingly similar to SUN: Sunplus Technology Co Ltd v OHIM (Class 46)

Featured Artists’ Coalition calls for copyright in sound recording to be extended and artists to be given control of copyright after 50 years (Out-Law)

Several revisions to Implementing Regulation of the EPC; changes in divisional practice (Patent Baristas) (Daily Dose of IP) (IPKat) (Patent Docs)

EC report finds IP rights don’t hinder clean tech transfer (Green Patent Blog)


New trade mark legislation (Afro-IP)


Finnish government issues policy statement on national intellectual property rights strategy (Class 46)


ECJ rejects by order, rather than by judgment, any idea of revisiting theory of gebundene Entscheidung: Bild. AG & Co. KG v President of Gernamn Patent- und Markenamt (IPKat)

Geobra Brandstätter assert copyright against vicar Pfarrer Markus Bomhard for using ‘deformed’ Playmobil figurines to depict biblical scenes (IPKat) (The IP Factor)

Bundesgerichtshof on when a trade mark is distinctive enough to qualify for registration: STREETBALL case (Class 46)

Still no infringement of Tuc cracker shape, says German appellate court (Class 46)


Well-known MOUYER trade mark safeguarded (International Law Office)


EU-India FTA negotiations continue: details… unknown (Spicy IP)

Ensuring transparent functioning: Functioning of Patent Offices to be revamped (Spicy IP)

Well-known marks well protected under Indian trade mark law: Ford Motor Company v Mrs C R Borman (IP Frontline)

Another Bajaj-TVS showdown in the offing? (Spicy IP)

Opposing identical trade mark registrations (International Law Office)


Economic stimulus for intellectual property in Ireland (Patent Baristas)


Adjudicator at Israel Patent Office rules on late filing of evidence (The IP Factor)


Super accelerated examination (IP Frontline)


Kenya exercises power to deal with substandard batteries (Afro-IP)


Determining reasonable remuneration for in-service inventions: Jung v Hanlim Pharm Co (International Law Office)


Appeals Div State Patent Bureau dismisses application by El DuPont de Nemours and Co, owner of FREON mark, for cancellation of FREOR (Class 46)

New Zealand

Opinions divided on the subject of subjectivity: WILD GEESE vs WILD TURKEY (International Law Office)


Patent stats from Norwegian Industrial Property Office show decline in ex-PCT applications (IPKat) (IPKat)


Peru ratifies Patent Cooperation Treaty (Moeller IP)


Supreme Administrative Court considers nature of a decision (Class 46)

District Administrative Court in Warsaw rules on non-use of a trade mark in case concerning APETITO mark (Class 46)

Reputation and renown of non-registered trade marks (Class 46)


Supreme Court on 3D marks… again! – Freixenet’s ‘frosted glass’ cava bottle (Class 46)


Court of appeals upholds rejection of Gucci’s face-to-face Gs logo in Sweden due to earlier rights of Gothenberg-based business (Class 46)


‘Swissness’ protection to include foodstuffs (Class 46)

United Kingdom

100 jobs axed at IPO, Newport (IPKat) (IAM)

Super-complainants: Do they have a role in patent litigation? (PatLit)

UNCITRAL – IP security and an absurdly tight deadline for response (IP finance)

Horse race sponsorship: what is central to centralised deals? (IP finance)

United States
US General

Obama Administration asked for ‘balance’ in intellectual property appointments (Public Knowledge) (Ars Technica) (Media Wonk) (EFF) (Law360) (Intellectual Property Watch)

Identity of new USPTO Director may soon be revealed (IAM)

The case against PACER: tearing down the courts’ paywall (Ars Technica)

US General – Lawsuits and strategic steps

Liner Grode Stein Yankelevitz Sunshine Regenstrief & Taylor LLP – ‘Web of misconduct’ earns Liner Grode sanction in attorney-client dispute in trade secrets case (Law360)

SimplexGrinnell – Settlement disagreement leads to copyright, trade secret and false advertising claims: SimplexGrinnell LP v Integrated Systems & Power, Inc (Rebecca Tushnet’s 43(B)log)

US Patent Reform

Senate Judiciary Committee passes Patent Reform Act of 2009 to Senate floor (Promote the Progress) (IP Watchdog) (Inventive Step) (Patent Baristas) (Patent Baristas) (Patent Docs) (IAM) (Intellectual Property Watch) (Managing Intellectual Property)

Senate amendments to the Patent Reform Act of 2009 (Promote the Progress)

Redline version of the Patent Reform Act of 2009 as approved by Senate Judiciary Committee (Promote the Progress)

Is the US Patent Reform Act’s damages apportionment compromise unravelling already? (IAM)

Not everyone thinks ‘patent reform’ is a great idea (Patent Docs)

Challenging patent reform first-to-file provision (IP Watchdog)

Patent reform legislation – chances for enactment by August? (IP Frontline)

US Patents

Percentage of patents that were initially rejected (Patently-O)

Design patents: Sailing through the PTO (Patently-O)

Patents and the auto industry bailout (Patently-O)

Tips for assisting the judge and jury in patent cases (IP Watchdog)

US patent counts, Q1 2009 (Patent Librarian’s Notebook)

What good are patent method claims? (Promote the Progress)

N D Illinois one step closer to adopting patent rules (Peter Zura’s 271 Patent Blog)

Innovate Texas Foundation launched to accelerate state’s IP commercialisation (Technology Transfer Tactics)

Special Masters and e-discovery: The intersection of two recent revisions to the Federal Rules of Civil Procedure – study by J P Kesan and G G Ball (Philip Brooks’ Patent Infringement Updates) (Law360)

Michael Risch paper ‘Patent Challenges and Royalty Inflation’ – restricting patent challenges may ease royalty inflation (Peter Zura’s 271 Patent Blog)

US Patents – Decisions

CAFC: Patent reform in action: Judge Rader provides damage apportionment clinic in District Court case: Cornell University v Hewlett-Packard (Peter Zura’s 271 Patent Blog) (Law360)

CAFC: Both Boston Scientific and Cordis have infringed certain patent elements in stent case (Law360)

CAFC revives Vector, Euclid patent spat; ambiguous patent assignment, ‘misfeasance’? (Law360) (Hal Wegner)

Federal Circuit denies Mandamus in In re Telular (

CAFC denies petition for writ of mandamus in certain semiconductor integrated circuits using tungsten metallisation: In re Cypress Semiconductor Corporation (ITC 337 Law Blog) (Law360)

District Court E D Texas: Limitations in licensing agreements did not constitute patent misuse: Hearing Components, Inc v Shure, Inc (

District Court N D Illinois: Missing joint claim construction deadline bars opposing offered constructions: Constant Compliance, Inc v Emerson Process Mgt. Power & Water Solutions, Inc (Chicago Intellectual Property Law Blog)

District Court E D Kentucky: Lexmark patents exhausted in light of Quanta (Law360)

Court of Federal Claims orders NASA to pay Boeing $17 million over aircraft patent infringement (Law360)

ITC judge upholds earlier finding that Sinochem infringed INEOS Fluor’ patents covering manufacturing process for coolant (Law360) (ITC 337 Law Blog)

ITC upholds sucralose ruling against Tate & Lyle (Law360)

CAFC: experiment use explained: Clock Spring LP v Wrapmaster, Inc (I/P Updates Updates)

Analysis and commentary on Tafas v Doll ruling (IP Frontline) (IP Frontline)

US Patents – Lawsuits and strategic steps

Abbyy USA – Court tosses ‘identical’ Abbyy scanning patent suit against Nuance Communications (Law360)

Artz & Artz – Chicago Insurance Co and Fireman’s Fund Insurance Co sue Artz & Artz and merger partner Dickinson Wright in bid to rescind policies after former partners concealed likely patent malpractice claim (Law360)

Electronic Data Systems Corp – Settlement reached in EDS prepaid phone patent spat (Law360)

Dynamotive – Bosch, Dynamotive settle over brake system patent (Law360)

Emsat Advanced Geo-Location Technology – Emsat and patent licensee sue Virgin Mobile, 7-Eleven and others for infringement of patents covering enhanced 911 services in cell phones (Law360)

Ford Motor Co – Two of three claims in tire pressure patent case against auto makers including Ford, General Motors ditched (Law360)

Funai Electric Co – Judge won’t stay $7 million VCR patent ruling against Daewoo (Law360)

IBM – ITC ALJ Essex rejects private parties’ proposed redactions to initial determination in investigation relating to computer products (ITC 337 Law Blog)

Fujitsu Ten Corp of America – Fujitsu, Affinity settle suit over car audio patent (Law360)

Guardian Technologies – Guardian accuses X10 Wireless Technology and Radio Shack of infringement patent related to security surveillance systems (Law360)

Honeywell International – Honeywell, Cree, Boston University end LED patent suit (Green Patent Blog)

John Mezzalingua Associates – Respondent’s joint motion to compel granted in coaxial cable connectors and components investigation brought by JMA (ITC 337 Law Blog)

Lear Corp – Lear loses bid to disqualify Butzel Long PC from appearing as co-counsel for Johnson Controls in garage door patent suit (Law360)

LSI Corp – LSI, Cypress strike deal over semiconductor patent (Law360)

Medtronic – Medtronic, Acacia Research Corp settle over catheter patent (Law360)

Motorola – Motorola, Command Audio settle DVD patent spat (Law360)

MPEG LA – MPEG sues Expedia Media for breach of patent license (Law360)

Northwest Airlines – Patent holders agree to drop patent infringement case against Northwest Airlines in deal that saw no money change hands (Law360)

Olympus America – Olympus, e.Digital settle flash memory patent spat (Law360)

Polaroid Corp – Patriarch Partners purchases bankrupt Polaroid in spite of objections from creditors involved in trade mark with Polaroid (Law360)

Rothschild, Prof G – ITC institutes investigation regarding LED chips, laser diode chips in response to complaint by Prof Gertrude Rothschild against Chi Mei Lighting, Tekcore, Toyolite, Tyntek, Visual Photonics, and Xiamen Sanan (ITC 337 Law Blog) (Law360)

Samsung – Spansion and Samsung settle patent litigation lawsuit over flash memory (Philip Brooks’ Patent Infringement Updates) (Law360)

Sanofi-Aventis Deutschland – Federal court stays patent infringement suit filed Sanofi against Novo Nordisk over safety needle for insulin injection (Law360)

Solo Cup Co – E D Virginia denies Solo’s bid to dismiss false patent marking suit for lack of subject matter (Law360)

TiVo – Court weighs sending TiVo, Dish DVR spat to Texas (Law360)

W L Gore & Associates – Federal judge denies W L Gore’s bid for new trial finding $185 million damage award to C R Bard not ‘monsterous’; judge ups damages to $371 million; value of old invention – patent-in-suit filed 1974 (Law360) (Law360) (12:01 Tuesday)

Xerox – Federal judge dismisses Kirsch Technology’s fax machine patent suit against Xerox and most of its claims against Canon (Law360)

US Copyright

Copyright Office ups fees for paper filings (Law360)  

US Copyright – Decisions

District Court Colorado: Uruguay Round Agreements Act (URAA) violates First Amendment to the extent it restored copyright against parties who had relied on works in the public domain: Golan v Holder (Lessig) (Technology & Marketing Law Blog) (Ars Technica) (Law360)

US Copyright – Lawsuits and strategic steps

Penguin Group – John Steinbeck’s heirs’ motion for summary judgment denied in ‘East of Eden’ royalties dispute with Penguin (Law360)

Steinbeck, Thomas – Final claims in epic Steinbeck family spat tossed (Law360)

US Trademarks

‘Generic’ may not be the best trademark, but it’s not generic at all (Seattle Trademark Lawyer)

The circle-R symbol must be earned; the Lanham Act should punish misuse (Seattle Trademark Lawyer)

US Trade Marks – Decisions

CAFC affirms TTAB’s AIRFLITE cancellation: Preparations for use not enough for service mark registration: Aycock Engineering, Inc v Airflite, Inc (precedential) (TTABlog)

Court of Appeals for the Third Circuit upholds Urban Outfitters’ trade mark suit win against BCBG Max Azria Group (Law360)

Court of Appeals for the Ninth Circuit affirms award of fees to World Triathlon Corporation in trade mark dispute with Archie Hapai and John Dunbar (Seattle Trademark Lawyer)

District Court Puerto Rico: classic trade mark ownership dispute; defendant a faithless servant indeed: Asociación de Industriales de Puerto Rico v. MarketNext, Inc (Property, intangible)

District Court N D Illinois: No disqualification for counsel’s prior meeting with both parties: Mindy’s Restaurant, Inc v Watters (Chicago Intellectual Property Law Blog)

District Court N D Illinois grants La Cafetière right to sells its coffee press in US in trade mark dispute with Bodum (Intellectual Property Watch)

Precedential no 14: TTAB finds THE MONTECITO DIET not primarily geographically descriptive of diet publications: In re Roy Mankovitz (TTABlog)

TTAB precedential no 13: TTAB axes Fender guitar shapes, finding them generic or lacking acquired distinctiveness: Stuart Spector Designs, Ltd v Fender Musical Instruments Corporation (TTABlog)

TTAB precedential no 12: TTAB again says false statement of first date is not fraud: Kathleen Hiraga v Sylvester J Arena (TTABlog)

TTAB finds religious habit not registrable: Lacks distinctiveness, inherent or acquired: Mary Queen of the Third Millenium, Inc v The Foundation for a Christian Civilisation, Inc (not precedential) (TTABlog)

US Trade Marks – Lawsuits and strategic steps

Cricket Communications – Cricket Communications and Hipcricket settle trade mark infringement lawsuit (Seattle Trademark Lawyer)

National Envelope Corp – Staples files motion to hold Fulbright & Jaworski in contempt over discovery dispute in trade mark battle between two envelope makers (Law360)

Nike – Pony accuses Nike of violating its chevron trade mark and engaging in unfair business practices (Law360)

US – Cuban company’s suit over ‘Havana Club’ trade mark refusal tossed (Law360)


Main differences between Decision 344 and 486 of Andean Community and the IP Law of 1955 (Moeller IP)


New Government’s fees for Industrial Property Procedures from March 21, 2009 (Trung Thuc)


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